The Complainant is Hammerson Plc., of London, United Kingdom of Great Britain and Northern Ireland, represented by Nabarro LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondents are Paolo Sossa of Barcelona, Spain and Domains by Proxy Inc. of Scottsdale, Arizona, United States of America.
The disputed domain name <hammersonequitygroup.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2010. On April 9, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 11, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 15, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 16, 2010. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 10, 2010.
The Center appointed Daniel J. Gervais as the sole panelist in this matter on May 20, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Formed in 1940, the Complainant is a real estate investment company. It estimates its UK real estate portfolio at almost USD 5 billion, including a number of shopping centers. As a FTSE 100 company, it is one of the 100 most highly capitalized UK companies listed on the London Stock Exchange.
The Complainant has owned a Community trademark for HAMMERSON since 1998 in relation with investment services. It also owns a more recent trademark registration for the same mark (2003) for insurance, banking and related services and a number of other trademark registrations.
The website to which the disputed domain name resolves was modified several times in the past few months. It offered, or referred to, investment opportunities and provided by “Hammerson Equity Group” at a contact address initially in Geneva, Switzerland later modified to Frankfurt, Germany. No entity known as “Hammerson Equity Group” was registered in Switzerland in the recent past.
The disputed domain name was registered on February 4, 2009.
The Complainant believes that the domain name is used by the actual registrant (Respondent Sossa) or with his authorization to operate a website as “Hammerson Equity Group” to which the disputed domain name resolves. According to the Complainant, this forms part of a “boiler room scam” to offer unregulated investments to the UK public. The website to which the domain name resolves is apparently used in this context as a “credible reference point” to convince potential investors.
The Complainant provided information tending to show that Hammerson Equity Group has suggested that it is connected to the Complainant. This includes a complaint and requests for information received from various members of the UK public. Additionally, the UK Financial Services Authority (FSA) issued an Alert on March 19, 2010, to inform the UK public that Hammerson Equity Group was not authorized under the Financial Services and Markets Act 2000 (FSMA) to carry on a regulated activity in the UK and had no association whatsoever with the Complainant.
In accordance with the Policy, the Complainant submits, first, that it has rights in the HAMMERSON mark, and the disputed domain name is confusingly similar with that mark. It introduced in evidence several cases of actual confusion by members of the public in the UK.
Second, the Respondent has no rights or legitimate interests in respect of the domain name. It is not authorized to use the Complainant's mark. It misleadingly uses the domain name to attract users to its website and does not offer bona fide goods or services. In addition, its use of the domain name is tarnishing the Complainant's mark.
Third, the Respondent has registered and is using the domain name in bad faith, by attracting users to its web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement.
The Respondent did not reply to the Complainant's contentions.
Pursuant to the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith, Policy, paragraph 4(a).
The Panel finds that the disputed domain name is confusingly similar to Complainant's HAMMERSON mark.
The disputed domain name < hammersonequitygroup.com > differs from the Complainant's registered HAMMERSON mark only in the addition of a description of the services and/or type of entity concerned - namely the words “equity group.” Said words indicate an entity involved in investment services, precisely the type of services offered by the Complainant. The addition thus does not diminish, and may in fact increase, the risk of confusion. See Dr. Ing. H.c.F. Porsche AG v. Vasily Terkin, WIPO Case No. D2003-0888.
The Panel finds that the Complainant has established the first element of the Policy.
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used or prepared to use the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain names.
With respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services. In fact, the record only points to an offering of services to UK-based clients which seems unauthorized under the FSMA, promoted by creating confusion with the Complainant's mark and services.
The Panel finds that the Complainant has established the second element of the Policy.
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent's website or other online location by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the respondent's site or of a product or service offered on the respondent's site. Policy paragraph 4(b)(iv).
The Panel finds that the Respondent registered the disputed domain name in bad faith.
The Complainant's allegations of bad faith are not contested. The record confirms the Complainant's allegations that it had long been using its HAMMERSON mark when the disputed domain name was registered. Moreover, the Complainant submitted evidence that the Respondent intentionally tried to create a false association between its offering of investments and the Complainant's. The Respondent must, therefore, have been aware of the Complainant's rights in the HAMMERSON mark and associated goodwill. In fact, as a FTSE 100 company, the Complainant is a well known company, and HAMMERSON as a well-known mark in the relevant segment of the public, namely people likely to purchase investment services.
The evidence shows that the Respondent used the disputed domain name to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant's HAMMERSON mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or service.
Accordingly the Panel finds that the Complainant has established bad faith registration and use of the disputed domain name by the Respondent.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <hammersonequitygroup.com> be transferred to the Complainant.
Daniel J. Gervais
Dated: June 1, 2010